INTELLECTUAL PROPERTY

Contact:

DATA BASE FOR CUSTOMS OF TRADEMARK’S REGISTRATION

09/06/2010
Contact:
Adriana Ibarra-Vázquez
aiv@sanchezdevanny.com
Turenna Ramírez-Ortiz
tramirez@sanchezdevanny.com

DATA BASE FOR CUSTOMS OF TRADEMARK’S REGISTRATION

On March 11, 2010, the "Fourth Resolution of Amendments to the General Foreign Regulations for 2009 and its Annexes 1, 4, 22 and 25" (the Resolution) was published in the Federal Official Gazette, in which the rule 2.4.19 was added in order to regulate the importation of goods, establishing a "trademark registration" containing relevant information for the customs authorities to detect possible intellectual property irregularities.
The rule 2.4.19 essentially establishes:

  • The customs authority will create a database containing the information provided by trademarks' holders in Mexico, which will be validated by the competent authority, in order to detect possible intellectual property irregularities, including at goods importation or at the inspection and survey of the handling, transportation or possession of goods in bonded warehouses'.
  • The basic information to submit consists of: 1).-trademark's name; 2).-name, domicile , tax id number, telephone and email of holder's and legal representative's; 3).-trademark's registration number; 4).-tariff classification; 5).-detailed description of the goods; 6).-registry's validity; 7).-trademark's logo; 8).-photographs of the goods, and its packaging design; and 9).-the importer's or distributor's name, domicile and tax id number.

We should remember that Customs is requiring now to the importer, to produce the trademark license agreement or distribution agreement whereby the trademark owner authorizes the use of the trademark evidencing the registry thereof in the Mexican Institute of Industrial Property (“IMPI”) registry.
If the importer fails to properly evidence license of the trademark or distribution agreement, Customs can assess administrative and/or criminal implications on such import to the importer and give notice to the General Prosecutor's Office (“PGR”), so that it can initiate applicable criminal action and seizure of the infringing products.
According to the Industrial Property Law (“IPL”), a trademark license agreement is required and must be registered before the IMPI only for the production of objects, products or services (includes publicity, advertising, promotions and any other that reproduce or use) and use of the trademarks, the register is not necessary for those that only distribute or commercialize the objects, products or services.
The IPL recognizes the use of a trademark by a licensee as if was used by the trademark holder with legal effects against third parties if the license agreement is registered before the IMPI. This is very important considering that if a trademark registration is not used directly by the owner in Mexico for three consecutive years, it may be subject to cancellation on the basis of non use.
Considering the above, it is advisable to register before the IMPI all the license or distribution agreements that grant the use of a trademark in Mexico.
Trademark owners or the authorized licensee/importer, can attempt to stop the importation of counterfeit products, providing the above information to Customs.
These measures definitely increase protection for trademark owners at the moment of the importation of products; however, they can also become an obstacle for legal trade. Therefore, it is extremely important that Company’s who import trademark protected products into Mexico, to ensure that:

  • The trademarks are properly registered in Mexico before the IMPI;
  • That the license or distribution agreements containing such license or an extract thereof are registered before the IMPI; and
  • Begin the preparation of the basic information required, including the photographs of the goods and its design and packaging.

In this basis, we suggest to the importers of trademark protected products to implement said measures in order to avoid delays and operative problems at the moment of the importation of goods. If you consider that your trademark might be subject to infringement or counterfeiting in the Mexican market, please consider these actions as an effective tool to prevent such unlawful use and trade.
So far, the specific guidelines of such amendment have not been published in the General Foreign Regulations for 2009, we expect that Customs will announce such guidelines on the General Customs Regulations for 2010 to be published in these days.

For more information, please contact Adriana Ibarra Vázquez at +52 (81) 8153-3900 or Turenna Ramirez-Ortiz +52 (55) 9000-2668.